On December 15, 2011, Advocate General Paolo Mengozzi gave his opinion to the Court of Appeal of England & Wales on whether soccer match schedules could be protected by copyright.  This opinion is a companion of sorts, to a ruling of the Court in 2004 that said the “fixture lists” as they are referred to, are not entitled to sui generis protection under Directive 96/9/EC regarding databases.

According to Directive 96/9/EC, databases can be protected by either copyright, or the sui generis right, which essentially considers how substantial of an investment was required to build up and maintain the database in order to determine if it is worthy of protection.  Since fixture lists failed on the sui generis claim in 2004, Advocate General Mengozzi considered whether the fixture lists Football Dataco Ltd. (and others) draw up could be protected by copyright.  Otherwise, they could be used freely, as Yahoo! UK (and others), the defendants, are hoping.

In this case, Football Dataco organizes both the English and Scottish soccer leagues by creating and publishing a list of all the matches to be played in the season.  Yahoo! UK has been using the schedules for its news service as well as for the purposes of organizing betting activities.  Football Dataco wants payment from parties like Yahoo! UK who use their fixture lists in such a way, and rely particularly on Article 3(1) of Directive 96/9/EC which states that “…databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation shall be protected as such by copyright…”

From this Article, Advocate General Mengozzi asks and answers a few important questions in giving his opinion:

“(1) what is meant by “databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation” and in particular:
(a) should the intellectual effort and skill of creating data be excluded?
(b) does “selection or arrangement” include adding important significance to a pre-existing item of data (as in fixing the date of a football match)?
(c) does “author’s own intellectual creation” require more than significant labour and skill from the author, if so what?”

Advocate General Mengozzi starts by noting that the Directive provides copyright protection for the structure of the database, not the contents, as they would be dealt with in the standard copyright law.  The sui generis right goes not to the originality of the database itself, and instead focuses on the investment of effort in the data it contains.  This is important because it shows that although the sui generis claim in 2004 failed, it does not necessarily ensure failure for a copyright claim in the same type of database.  Furthermore, it also foreshadows Advocate General Mengozzi’s ultimate conclusion, as he notes that Yahoo! have limited their use of the fixture list to the use of the data contained – the dates, teams, times – and not the structure of the list itself.

Advocate General Mengozzi essentially answered his own question 1(a) with his opening considerations of the issue, as he notes that any factor connected with the creation of data, like intellectual effort and skill, must fall outside of the scope of the Directive.

Regarding 1(b), the problem found in Football Dataco’s claim is that the data entered into the fixture lists has already been finalized before it goes into the database.  Team X versus Team Y on Date Z is already decided before the information is put on the fixture list.  Once again, this means that since any “selection or arrangement” that might be worthy of copyright protection takes place at the data creation stage, rather than as a result of the structure of the database itself, Football Dataco’s claim in this respect should fail, according to Advocate General Mengozzi.  He does note however, that while Football Dataco should fail on this point, in general, when data is put into a database such inputting could add “important significance” to the data and thus afford the database protection in that situation.

Question 1(c) concerns whether the way data is selected and arranged in a database by the author is intellectually creative enough to be afforded copyright protection.  Once again, Advocate General Mengozzi sees Football Dataco’s problem hinging on the fact that any creativity takes place before the information is put into the database.  At the input stage, he states, “it is not sufficient [for copyright protection] that the creation of the database required labour and skill.”  He recognizes that generally, the originality threshold required for copyright, in most jurisdictions is actually quite low and often met precisely when a creator applies labour, skill or effort.  However, the threshold of originality that the Directive requires is more than mere effort and focuses on creativity, since the sui generis protection is the branch of protection concerned with resources and work expended in creating and maintaining the database.

The opinion of Advocate General Mengozzi appears to skew more toward the reasoning of the United States Supreme Court in Feist Publications, Inc. v. Rural Tel. Service Co., rather than the Supreme Court of Canada’s decision in CCH Canadian Ltd. v. Law Society of Upper Canada.  While both of those cases rejected the “sweat of the brow” doctrine for an original work, the United States Supreme Court required a “minimal degree of creativity” while the Supreme Court of Canada called for the “exercise of skill and judgment”.  In fact, it would seem that the Directive forces Advocate General Mengozzi to call for this slightly higher standard.

For Advocate General Mengozzi, if Football Dataco, and parties in a similar situation, want copyright protection, all is not completely lost.  He states that if the creator, in putting the database together, introduces original features, like a particular color coded or graphic based means for representing the data, it could be a very likely candidate for copyright protection.

Brent Randall is a JD candidate at the University of Ottawa.

Posted in Copyright, Feature Post, IP, Jurisdiction, UK